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2646    Decision Ordering Reexamination [R-11.2013]

35 U.S.C. 313   Inter partes reexamination order by Director.

[Editor Note: As in effect prior to September 16, 2011.]

If, in a determination made under section 312(a), the Director finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.

35 U.S.C. 313  Inter partes reexamination order by Director.

[Editor Note: As in effect beginning September 16, 2011 and ending September 15, 2012.]

If, in a determination made under section 312(a), the Director finds that it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.

37 C.F.R. 1.931   Order for inter partes reexamination.

[Editor Note: As in effect for a request filed prior to September 16, 2011.]

  • (a) If a substantial new question of patentability is found, the determination will include an order for inter partes reexamination of the patent for resolution of the question.
  • (b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.

37 C.F.R. 1.931  Order for inter partes reexamination.

[Editor Note: As in effect for a request filed beginning September 16, 2011 and ending September 15, 2012.]

  • (a) If it is found that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, the determination will include an order for inter partes reexamination of the patent for resolution of the question of whether the requester will prevail.
  • (b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.

If a request for reexamination is granted, the examiner’s decision granting the request will conclude by stating:

-For a request filed prior to September 16, 2011 - that a substantial new question of patentability (SNQ) has been raised affecting a claim of a patent.

-For a request filed beginning September 16, 2011 and ending September 15, 2012 - that there is a reasonable likelihood that the requester will prevail (RLP) with respect to at least one of the claims challenged in the request.

These conclusions (depending on when reexamination was filed) will be referred to collectively as a conclusion that "there is a SNQ/RLP" .

The decision will (A) identify all claims and issues, (B) identify the patents and/or printed publications relied upon, and (C) provide a brief statement of the rationale supporting each SNQ/RLP.

In the examiner’s decision, the examiner must identify at least one SNQ/RLP and explain how the prior art patents and/or printed publications establish that SNQ/RLP. In a simple case, this may entail adoption of the reasons provided by the third party requester. The references relied on by the examiner should be cited on a PTO-892 form, unless already listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms) submitted by the third party requester. A copy of the reference should be supplied only where it has not been previously supplied to the patent owner and third party requester.

Where it is not clear that a patent or printed publication pre-dates the patent claims, a discussion should be provided as to why the patent or printed publication is deemed to be available against the patent claims.

If arguments are raised by the third party requester as to grounds not based on patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c), the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.906(c).

In the decision on the request, the examiner does not decide the ultimate question of patentability of the claims. Rather, the examiner only decides whether there is a SNQ/RLP established sufficient to grant the request and order reexamination.

The decision granting the request is made using form PTOL-2063 as a cover sheet. See MPEP § 2647.01 for an example of a decision granting a request for inter partes reexamination.

Form Paragraph 26.01 is used at the beginning of each decision letter granting reexamination.

For a request filed prior to September 16, 2011, the following version was to be used:

Former 26.01 New Question of Patentability

A substantial new question of patentability affecting claim [1] of United States Patent Number [2] is raised by the present request for inter partes reexamination.

Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(2).

For a request filed beginning September 16, 2011 and ending September 15, 2012, the following version is used:

¶ 26.01    Reasonable likelihood established

The present request for inter partes reexamination establishes a reasonable likelihood that requester will prevail with respect to claim [1] of United States Patent Number [2].

Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(2).

Form paragraph 26.73 is used at the end of each decision letter granting reexamination that is not being mailed concurrently with the first Office action on patentability (see MPEP § 2660).

¶ 26.73    Correspondence and Inquiry as to Office Actions

All correspondence relating to this inter partes reexamination proceeding should be directed:

By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/myportal/efs-registered.

By Mail to: Mail Stop Inter Partes Reexam

Attn: Central Reexamination Unit

Commissioner for Patents

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to: (571) 273-9900

Central Reexamination Unit

By hand: Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.

Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.

Examiner Note:

  • 1. This form paragraph is used at the end of inter partes reexamination communications.
  • 2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.

I.   PROCESS OF PREPARING THE DECISION ON THE REQUEST, AND ANY ACCOMPANYING OFFICE ACTION

After the reexamination file has been reviewed in the Central Reexamination Unit (CRU) to ensure that it is ready for examination, the reexamination proceeding is assigned to an examiner.

In the event the CRU Reexamination Specialist (SPRS) believes that another Art Unit within the CRU should examine the reexamination file, see MPEP § 2637 for procedures for transferring the reexamination file.

After the examiner receives the new inter partes reexamination file, the examiner prepares for and sets up a panel review conference as per MPEP § 2671.03, to discuss the issuance of a decision on the request for reexamination, and, where applicable, a first Office action to accompany the decision. The examiner may prepare the decision on the request for reexamination, and, where applicable, the first Office action to accompany the decision after the conference, or may prepare the decision on the request for reexamination, and, where applicable, the first Office action prior to the conference and revise it as needed after the conference.

The conference is conducted. If the conference confirms the examiner’s preliminary decision to grant reexamination, the decision on the request for reexamination, and any first Office action to accompany the decision (also confirmed), is completed and signed by the examiner, with the two, or more, other conferees initialing the action (as “conferee”) to indicate their presence in the conference. A transmittal form PTOL-501 with the third party requester’s address are completed, if a copy for mailing is not already available. The transmittal form PTOL-501 is used to forward copies of Office actions (and any references cited in the actions) to the third party requester. Whenever an Office action is issued, a copy of this form is made and attached to a copy of the Office action. The use of this form removes the need to retype the third party requester’s address each time a mailing is required. In conjunction with the mailing, any appropriate processing (e.g., PALM work, update scanning) is carried out by the staff of the CRU.

II.   PETITION TO VACATE THE ORDER GRANTING REEXAMINATION

A substantive determination by the Director of the Office to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability is not subject to review by petition or otherwise. See Joy Mfg. Co. v. Nat’l Mine Serv. Co., Inc., 810 F.2d 1127, 1 USPQ2d 1627 (Fed. Cir. 1987); Heinl v. Godici, 143 F.Supp. 2d 593 (E.D. Va. 2001); see also Patlex Corp. v. Quigg, 680 F.Supp. 33, 6 USPQ2d 1296, 1298 (D.D.C. 1988) (the legislative scheme leaves the Director’s 35 U.S.C. 303 determination entirely to his discretion and not subject to judicial review). These decisions were rendered for ex parte reexamination; however, the holdings of these decisions apply equally for a SNQ finding in inter partes reexamination proceedings, since the language of 35 U.S.C. 303(c) (i.e., the ex parte reexamination statute) is also found in 35 U.S.C. 312(c) (i.e., the inter partes reexamination statute). In like manner, these decisions apply equally for a RLP finding in inter partes reexamination proceedings. Because the substantive determination is not subject to review by petition or otherwise, neither the patent owner nor the third party requester has a right to petition, or request reconsideration of, a finding that the prior art patents or printed publications raise a SNQ/RLP. There is no right to petition such a finding even if the finding of a SNQ/RLP is based on reasons other than those urged by the third party requester (or based on less than all the grounds urged by the third party requester). Where the examiner determines that a date of a reference is early enough such that the reference constitutes prior art, that determination is not petitionable (with respect to vacating the examiner’s finding of a SNQ/RLP). Where the examiner determines that a reference is a printed publication (i.e., that the criteria for publication has been satisfied), that determination is also not petitionable. These matters cannot be questioned with respect to vacating the order granting reexamination.

A petition under 37 CFR 1.181 may, however, be filed to vacate a reexamination order where no discretion to grant a request for reexamination exists. "Appropriate circumstances" under 37 CFR 1.181(a)(3) exist to vacate the order granting reexamination where, for example:

  • (A) the reexamination order is facially not based on prior art patents or printed publications;
  • (B) reexamination is prohibited under 37 CFR 1.907;
  • (C) all claims of the patent were held to be invalid by a final decision of a Federal Court after all appeals;
  • (D) reexamination was ordered for the wrong patent; or
  • (E) reexamination was ordered based on a duplicate copy of the request.

While a patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate a reexamination order as "ultra vires," such a petition should be rare, and will be granted only in the extremely rare situation where the Office acted in "brazen defiance" of its statutory authority in granting the reexamination order. See Heinl, 143 F. Supp. 2d at 601-02. This occurs only where the Office applied the wrong standard in ordering reexamination; a petition is not to be filed to challenge the Office’s application of the correct standard, since such is barred by statute. See 35 U.S.C. 312(c). (Petitions to vacate a reexamination order are delegated to the Director of Central Reexamination Unit (CRU)).

When a petition under 37 CFR 1.181 is filed to vacate a reexamination order, the third party requester may file a single submission in opposition to the petition. Because reexamination proceedings are conducted with special dispatch, 35 U.S.C. 314(c), any such opposition by the third party requester must be filed within two weeks of the date upon which a copy of the original 37 CFR 1.181 petition was served on the third party requester to ensure consideration. It is advisable that, upon receipt and review of the served copy of such a 37 CFR 1.181 petition which the third party requester intends to oppose, the requester should immediately place a courtesy telephone call to the CRU SPRS to notify the Office that an opposition to the 37 CFR 1.181 petition will be filed. Whenever possible, filing of the opposition should be submitted by facsimile transmission.

The filing of a 37 CFR 1.181 petition to vacate an ultra vires reexamination order is limited to a single submission, even if an opposition thereto is filed by a third party requester.

III.   PRIOR ART SUBMITTED AFTER THE ORDER

Any prior art citations under 37 CFR 1.501 submitted after the date of the decision ordering inter partes reexamination should be retained in a separate file by the Technology Center (TC) (usually the TC Quality Assurance Specialist (QAS)) and stored until the reexamination proceeding is concluded, at which time the prior art citation is then entered in the record of the patent file. See MPEP § 2206. Note that 37 CFR 1.902 governs submissions of prior art that can be made by patent owners and third party requesters after reexamination has been ordered.

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Last Modified: 03/27/2014 10:10:35